Paris First Instance Court - GUCCIO GUCCI & al v/ VETIR
GUCCIO GUCCI S.p.A. & GUCCI FRANCE v/ VETIR
The company Vetir (Eram Group) was represented by Arnaud Casalonga Attorney at Law.
In 2011 the companies Guccio Gucci and Gucci France filed a complaint against the company Vetir on trademark infringement and unfair competition, on the basis of the sale of shoes bearing a horse bit on the vamp.
This horse bit was filed as a three-dimensional mark in France by the Italian company Guccio Gucci on April 28, 1993 in Class 25.
The companies Guccio Gucci and Gucci France were dismissed by the Court of all their claims and the Gucci trademark was cancelled for lack of distinctive character.
The Court decided that the figurative sign representing a horse bit, known under the name "thread olive" was not sufficiently distinct from the normal uses for shoes. The Court also stated that other operators had used freely the same figurative sign as a decorative element on shoes and leather goods more than 40 years before the filing of the mark.
The Court also considered that the evidence submitted by the Gucci company did not prove that the mark had acquired distinctive character through use in France. The arguments of Gucci on the weakening of its brand reputation were also rejected.
Since the mark was cancelled, the Court held the claims for infringement moot. The Court also rejected the unfair competition claim and decided that the moccasin sold by Vetir with the bit on the vamp was banal and presented differences as compared with the Gucci shoes.
The right of occupancy that allows, by contrast to the right of creation to protect as a trademark a three-dimensional decorative object which is part of the public domain is here limited in scope by the Court which prevented the Gucci companies to benefit of a protection for an unlimited duration on a sign which is a usual figurative style available to everyone.